Apogee shoots down serial cybersquatter in 'dukenukem3d.com' dispute


In Apogee Software Ltd v John Zuccarini, World Intellectual Property Organization (WIPO) panellist Maxim H Waldbaum has ordered the transfer of 'dukenukem3d.com' from serial cybersquatter Zuccarini to Apogee. Waldbaum used the decision to emphasize the merits of WIPO and its importance in fighting repeat infringers of trademark rights. This seems to be contradictory since WIPO has issued more than 45 bad-faith domain name registration decisions against Zuccarini.

Apogee, a US manufacturer of computer games, owns a US trademark registration for DUKE NUKEM in relation to computer games. In 1996 it released a computer game called 'Duke Nukem 3D', which was the third instalment of its well-known and highly successful 'Duke Nukem' computer game franchise. Apogee filed a complaint under the Uniform Domain Name Dispute Resolution Policy with WIPO, arguing that Zuccarini's registration and use of 'dukenuke3d.com' infringed its trademark rights. Zuccarini is a notorious serial cybersquatter and is the subject of numerous bad-faith domain name registration decisions.

Waldbaum ordered the transfer of the disputed domain name to Apogee. He had little difficulty in finding that Zuccarini lacked legitimate interests in the domain name and had registered it in bad faith. He also took the opportunity to emphasize the importance of WIPO in stopping cybersquatters and protecting trademark rights. He said:

"The [r]egistrant's actions show why it is necessary for an organization such as the WIPO to have the power to sanction such bad-faith use of domain names. Without such an organization wielding enforcement and sanction powers, persons such as the [registrant] would continue to register domain names that incorporate well-known companies' trademarks."

Unfortunately, this decision is precisely an example of why WIPO does not have the power to stop determined serial cybersquatters. More than 100 decisions ordering the transfer of domain names registered in bad faith by Zuccarini has done little to stop him. Under the current system, it is very likely that he, and others like him, will continue to be embroiled in disputes with trademark owners.

For discussion of another Zuccarini defeat, see 'Garfeild.com' transferred in typosquatting cat-fight.

Jennifer A Ross-Carrière, Osler Hoskin & Harcourt LLP, Ottawa

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